`Date: February 9, 2018
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner
`
`v.
`
`LEGEND 3D, INC.,
`Patent Owner
`
`
`IPR2016-01243
`U.S. Patent No. 7,907,793
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONER’S REQUEST FOR REHEARING
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`C.
`
`D.
`
`B.
`
`Page
`INTRODUCTION ........................................................................................... 1
`PRIME’S SUGGESTION THAT THE BOARD EXCEEDED ITS
`AUTHORITY IS FATALLY FLAWED ........................................................ 2
`A.
`The Board Has Authority to Decide If the Petitioner Failed to
`Meet Its Burden – That Is the Board’s Primary Role ........................... 2
`The Board’s Finding That Petitioner Failed to Meet Its Burden
`Is Not a “New Theory” .......................................................................... 5
`The Board Is Not Boxed into Its Preliminary Findings at the
`Institution Decision Phase, as Prime Suggests ...................................... 8
`Prime Would Have the Board Moot Prime’s Burden of
`Persuasion Requirement or Shift It to Patent Owner ............................ 9
`Prime Misapplies the Concept of Due Process ................................... 10
`E.
`Prime Was Not Unjustly Prejudiced ................................................... 11
`F.
`III. THE BOARD DID NOT MISAPPREHEND OR OVERLOOK ANY
`ARGUMENTS AND EVIDENCE BECAUSE THOSE
`ARGUMENTS WERE NOT TIMELY ......................................................... 12
`A.
`The Board Fully Addressed the Only Combinability Arguments
`and Evidence Prime Presented During Trial ....................................... 12
`Section III of Prime’s Request is Replete with New Argument
`Never Before Raised ........................................................................... 13
`IV. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`Page(s)
`
`
`Cases
`Dell Inc. v. Acceleron, LLC
`818 F.3d 1293 (Fed. Cir. 2016) ............................................................................ 5
`EmeraChem Holdings LLC v. Volkswagen Grp. of Am., Inc.
`859 F.3d 1341 (2017), 1351-52 (Fed. Cir. 2017) ................................................. 6
`Global Tel*link Corp. v. Securus Techs., Inc.
`2017 WL 2983402 ................................................................................................ 2
`In re Kahn
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 4
`KSR Int’l Co. v. Teleflex Inc.
`550 U.S. 398 (2007) .............................................................................................. 4
`In re Magnum Oil Tools Int’l, Ltd.
`829 F.3d 1364 (Fed. Cir. 2016) ................................................2, 3, 4, 8, 9, 10, 11
`In re Nuvasive, Inc.
`841 F.3d 966 (Fed. Cir. 2016) ........................................................................ 5, 15
`Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG
`856 F.3d 1019 (Fed. Cir. 2017) ............................................................................ 6
`SAS Inst., Inc. v. ComplementSoft, LLC
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 7
`Statutes
`Title 5 of the United States Code section 554(b)(3) .................................................. 6
`Title 5 of the United States Code section 554(c) ....................................................... 6
`Title 5 of the United States Code section 556(d) ....................................................... 6
`Title 35 of the United States Code section 103 ....................................................... 10
`
`
`
`ii
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`Title 35 of the United States Code section 316(e) ................................................. 2, 9
`Other Authorities
`Title 37 Code of Federal Regulations section 42.104 .............................................. 10
`Title 37 Code of Federal Regulations section 42.107 ................................................ 2
`
`
`
`
`iii
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`Pursuant to the Board’s authorization and in response to Petitioner’s Request
`
`for Rehearing (the “Request,” Paper 55), Patent Owner submits this Opposition to
`
`Petitioner’s Request and respectfully submits that Petitioner’s Request should be
`
`denied.
`
`I.
`
`INTRODUCTION
`Prime’s Request is about one thing: Prime’s failure to meet its burden
`
`to show the alleged combinability of Sullivan with the ‘670 and ‘081 patents, and
`
`its belated and improper attempt to get a second bite at the apple after the trial has
`
`concluded. Prime attempts to blame its failure on the Board (e.g., for allegedly
`
`raising a “new theory”) and Patent Owner (e.g., for choosing not to rebut the
`
`alleged combinability). Yet, the Board raised no new theories – rather, it merely
`
`rendered judgment on the record; and Patent Owner was not required to respond to
`
`each and every argument in Prime’s Petition no matter how half-baked such
`
`arguments were. Nevertheless, Prime would have the Board excuse Prime’s failure
`
`to meet its burden, despite the fact that this burden begins and ends with Prime.
`
`If Prime had its way, the Board would be boxed into its Institution
`
`Decision and unable to rule differently at the end of trial to the extent that a patent
`
`owner chooses to not respond to each and every argument in a petition. This
`
`ignores, inter alia, the fact that the Institution Decision is based on a “reasonable
`
`
`
`1
`
`
`
`likelihood” and the final Judgment is based on a different, “preponderance of the
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`evidence” standard. 37 CFR 42.107; 35 U.S.C. § 316(e).
`
`Now, faced with its failure to meet its burden, Prime is improperly
`
`attempting to use its Request to bolster its Petition regarding combinability ex post
`
`facto and introduce new arguments for the first time. Accordingly, it would be
`
`improper for the Board to give any weight to these new arguments that Prime
`
`failed to raise during trial.
`
`II.
`
`PRIME’S SUGGESTION THAT THE BOARD EXCEEDED ITS
`AUTHORITY IS FATALLY FLAWED
`A. The Board Has Authority to Decide If the Petitioner Failed to
`Meet Its Burden – That Is the Board’s Primary Role
`“In an inter partes review . . . , the petitioner shall have the burden of
`
`proving a proposition of unpatentability by a preponderance of the evidence.” 35
`
`U.S.C. § 316(e). There is no question that the Board has the authority to determine
`
`whether a petitioner has met its burden, even where a patent owner remains silent
`
`on an issue. See Global Tel*link Corp. v. Securus Techs., Inc., 2017 WL 2983402,
`
`PGR2015-0014, at *2 (PTAB July 12, 2017) (denying Petitioner’s Request for
`
`Rehearing, stating “we do not agree with Petitioner that Magnum Oil limits our
`
`evaluation of whether Petitioner met its burden to [only those] arguments advanced
`
`by Patent Owner”); see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`
`
`
`2
`
`
`
`1377 n.1 (Fed. Cir. 2016) (“[T]he patent owner is not required to use its
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`opportunity under the regulations to file a patent owner response.”).
`
`Nevertheless, Prime complains that Patent Owner never challenged
`
`the combinability of Sullivan with the ’670 and/or ‘081 Patents, then blames Board
`
`and distorts Magnum Oil to support its argument that “[i]t was improper for the
`
`Board to adopt this new theory for the first time in its Final Written Decision.”
`
`Request at 3. Prime fails to cite any direct authority for its allegation that simply
`
`because Patent Owner remained silent on combinability, Prime should somehow
`
`get a pass on meeting its burden. Instead, Prime tries to shoehorn its arguments
`
`regarding the alleged impropriety of the Board’s decision into a gross misreading
`
`of Magnum Oil. Request at 3-4. But Magnum Oil, as cited by Prime, merely states
`
`that the Board may not “adopt arguments on behalf of petitioners that . . . were not
`
`raised by petitioners.” Magnum Oil, 829 F.3d at 1381 (emphasis added). Magnum
`
`Oil is inapposite, however, because the issue here is not that the Board introduced
`
`new arguments that a petitioner previously failed to present. Rather, Prime
`
`complains because the Board simply weighed the arguments already presented by
`
`petitioner, and found them deficient.
`
`Indeed, Prime’s citation of Magnum Oil actually supports the Board’s
`
`findings: “Instead, the Board must base its decision on arguments that were
`
`advanced by a party and to which the opposing party was given a chance to
`
`
`
`3
`
`
`
`respond.” Magnum Oil, 829 F.3d at 1381. That is exactly what happened here.
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`Prime advanced an argument regarding Sullivan’s alleged combinability with the
`
`‘670 and ‘081 patents; Patent Owner was given a chance to respond; and the Board
`
`based its decision on its finding that Prime’s argument was deficient. Accordingly,
`
`the Board’s actions were proper under Magnum Oil.
`
`If Prime’s faulty reading of Magnum Oil were correct, the Board’s
`
`institution decisions would necessarily translate to conclusions of unpatentability
`
`whenever a patent owner opted not to respond – or worse, lacked sufficient word
`
`count to respond – to each and every argument regardless of its merit. But the
`
`Federal Circuit rejected this impractical outcome. Magnum Oil, 829 F.3d at 1377
`
`n.1 (“[T]he institution of an IPR does not by itself translate to a conclusion of
`
`unpatentability and the patent owner is not required to use its opportunity under the
`
`regulations to file a patent owner response.” (emphasis added)).
`
`The simple fact is that Prime failed to meet its burden to set out
`
`articulated reasoning with some rational underpinning to support the alleged
`
`combinability of Sullivan. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Prime’s failure cannot be
`
`cured or rendered moot by the Patent Owner’s silence with regard to an issue.
`
`Magnum Oil, 829 F.3d at 1377. And it would be nonsensical to conclude that the
`
`Board is prohibited from finding that Prime’s burden was not met. Moreover, as
`
`
`
`4
`
`
`
`explained below in Section I.B, Prime’s suggestion that the Board presented a
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`“new theory” is entirely inaccurate.
`
`B.
`
`The Board’s Finding That Petitioner Failed to Meet Its Burden Is
`Not a “New Theory”
`The Board did not adopt a “new theory” when it observed that
`
`Petitioner failed to meet its burden by not adequately fleshing out its own theory of
`
`unpatentability. The Board merely ruled on Prime’s existing theory of
`
`unpatentability based on the evidence on the record. And even if the basis of the
`
`Board’s ruling could somehow be considered a “new theory,” it certainly cannot be
`
`considered a “new theory of unpatentability” – the type of prohibited “new theory”
`
`addressed by the authority cited by Prime. Request at 3-5.
`
`Particularly, Prime’s attempt to support its argument that the Board
`
`erred relies on a series of inapposite cases. These cases only restrict the Board
`
`from augmenting a petitioner’s arguments to reach a finding of unpatentability
`
`without giving the patent owner an opportunity to respond, not from ruling on the
`
`adequacy of the petitioner’s arguments based on the evidence properly in the
`
`record. See In re Nuvasive, Inc., 841 F.3d 966, 972, 975 (Fed. Cir. 2016) (finding
`
`the Board improperly relied on uncited portions of the prior art as a basis for
`
`finding unpatentability); Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed.
`
`Cir. 2016) (finding the Board improperly relied on a basis of unpatentability raised
`
`
`
`5
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`for the first time during the oral hearing); Rovalma, S.A. v. Bohler-Edelstahl GmbH
`
`& Co. KG, 856 F.3d 1019, 1029 (Fed. Cir. 2017) (The Board must timely inform a
`
`patent owner of ‘the matters of fact and law asserted,’ give the patent owner an
`
`‘opportunity’ for the ‘submission and consideration of facts’ and ‘arguments,’ and
`
`permit the patent owner ‘to submit rebuttal evidence, and to conduct such cross-
`
`examination as may be required for a full and true disclosure of the facts.’”
`
`(quoting 5 U.S.C. §§ 554(b)(3), (c), 556(d)) (emphasis added); EmeraChem
`
`Holdings LLC v. Volkswagen Grp. of Am., Inc. 859 F.3d 1341 (2017), 1351-52
`
`(Fed. Cir. 2017) (The Board improperly relied on a different prior art reference
`
`when determining unpatentability of certain claims in its final written decision.).
`
`These cases stand for the proposition that the Board cannot deprive a
`
`patent owner of its property right (i.e., its patent) without giving the patent owner
`
`an adequate chance to respond to the challenges threatening its property right –
`
`whether those challenges come from the Board or the petitioner. But these cases
`
`do not support Prime’s theory that a petitioner’s failure to meet its burden must be
`
`ignored by the Board because this failure was not earlier challenged by either the
`
`Board or the patent owner. Here, the Board did not change any theories; it simply
`
`found that Prime failed to show obviousness by a preponderance of the evidence.
`
`Ironically, in order to arrive at a decision of unpatentability on claims
`
`3-6 and 15-18 as Prime would have liked, the Board would have been required to
`
`
`
`6
`
`
`
`add its own arguments on combinability to Prime’s mere conclusory statements to
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`develop a “new theory of unpatentability” that Prime failed to adequately set forth
`
`in its Petition. This is exactly the type of conduct Prime’s cited authority prohibits.
`
`Neither is SAS Inst., Inc. v. ComplementSoft, LLC helpful to Prime.
`
`While this case addressed procedural safeguards for the petitioner, it was decided
`
`on the basis of a claim term newly construed in the final written decision. SAS
`
`Inst., 825 F.3d 1341, 1350-52 (Fed. Cir. 2016). This is far different from the case
`
`at hand. In SAS Inst., the Board made a new construction in its final written
`
`decision that “varie[d] significantly from its initial interpretation of the term.” Id.
`
`This placed a brand new legal challenge in front of the Petitioner for establishing
`
`unpatentability, one that could not possibly have been met at that stage in the
`
`proceeding. Here, by contrast, the Board did not change the legal standard that
`
`Prime needed to meet to prove unpatentability. The Board simply ruled based on
`
`the preponderance of the evidence standard. In preparing its Petition, Prime knew
`
`or should have known of the legal standard it would ultimately face, yet Prime
`
`failed to meet this standard.
`
`As a further attempt to bolster its argument, Prime claims that “the
`
`Board relied on previously uncited evidence in support of its new theory.” Request
`
`at 6. However, it is telling that Prime did not cite to any of this purported
`
`“previously uncited evidence” in support of this “new theory.” Indeed, as the
`
`
`
`7
`
`
`
`Board knows, the Board simply weighed the evidence presented by Petitioner and
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`made its ruling based on the insufficiency of that evidence.
`
`Indeed, each of the Board’s conclusions is properly based on one or
`
`more of Prime’s failures to meet its burden, not on any “previously uncited
`
`evidence” or “new theories” on the merits. See Paper 54 at 43-44 (“Petitioner’s
`
`proffered rationale fails to address . . . .”; “Petitioner offers only a conclusory
`
`statement . . . .”; “Petitioner never identifies . . . .”; “Petitioner’s assertion . . . is
`
`conclusory and untethered from Sullivan”; “Neither Petitioner nor Dr. Forsyth
`
`explain how or why one of ordinary skill in the art would recognize. . . .”;
`
`“Petitioner’s invocation of a simple substitution also is insufficiently explained”;
`
`“Petitioner makes no attempt to show . . . .”). These are not “new theories” but are
`
`simply rulings on the insufficiencies of arguments advanced by Petitioner.
`
`C. The Board Is Not Boxed into Its Preliminary Findings at the
`Institution Decision Phase, as Prime Suggests
`Not only is the Board not confined to its Preliminary Findings, but it
`
`has “an obligation to assess the question anew after trial based on the totality of the
`
`record.” Magnum Oil, 829 F.3d at 1364. The Board viewed the evidence under a
`
`lower standard applicable at the Institution phase, and properly reassessed the
`
`question anew under the higher standard at the Final Written Decision phase. Id. at
`
`1376 (“[T]he decision to institute and the final written decision are two very
`
`
`
`8
`
`
`
`different analyses, and each applies a qualitatively different standard” (emphasis
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`added) (internal quotation marks omitted).
`
`Prime also argues unpersuasively that the Board “changed its theory
`
`on the combinability of Sullivan between the Institution Decision and the Final
`
`Written Decision.” Request at 5. Here again, Prime ignores the fact that the “that
`
`the decision to institute and the final written decision are two very different
`
`analyses, and each applies a qualitatively different standard.” Magnum Oil at 1376
`
`(emphasis added). Accordingly, the board is permitted to reach a different result in
`
`its final written decision.
`
`D.
`
`Prime Would Have the Board Moot Prime’s Burden of
`Persuasion Requirement or Shift It to Patent Owner
`As noted above, Prime bears the burden of persuasion in this non-
`
`burden-shifting environment of an inter partes review. Per Magnum Oil, “[i]n an
`
`inter partes review, the burden of persuasion is on the petitioner to prove
`
`‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that
`
`burden never shifts to the patentee.” 829 F.3d at 1375 (emphasis added). This is
`
`especially true where the only issues to be considered are what the prior art
`
`discloses, whether there would have been a motivation to combine the prior art,
`
`and whether that combination would render the patented claims obvious. Id at
`
`1376. Accordingly, the petitioner must make its arguments, and it either succeeds
`
`
`
`9
`
`
`
`in meeting its burden or fails. Here, as the Board ruled, Prime merely provided
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`conclusory statements and failed to meet its burden. Paper 54 at 42-45.
`
`Prime’s Request would flout Federal Circuit case law by having a
`
`petitioner’s burden of persuasion requirement either mooted where a patent owner
`
`elects to not respond, or shifted to require the patent owner respond simply because
`
`an argument was raised in the petition. Prime’s Request is replete with argument
`
`that suggests the consequence of not addressing an argument set forth in a petition
`
`is that the Board is prohibited from finding against a petitioner on that issue when
`
`rendering its final written decision. Request at 1, 3, 7. This is not the law.
`
`Prime’s arguments are tantamount to now requiring that a patent
`
`owner rebut each and every argument in the petition. This amounts to nothing
`
`more than shifting the burden of persuasion to the patent owner once the petition is
`
`filed, regardless of whether the petitioner has met its burden on a particular issue.
`
`Not only would this dispense with Prime’s burden, but this would be wholly
`
`inconsistent with the Federal Circuit’s mandate that “[petitioner’s] burden never
`
`shifts to the patentee.” Magnum Oil, 829 F.3d at 1375 (emphases added).
`
`E.
`
`Prime Misapplies the Concept of Due Process
`Prime hired excellent counsel who are presumably aware of the
`
`requirements of 37 CFR § 42.104 and of 35 U.S.C. § 103, as well as the body of
`
`case law surrounding these provisions. Yet, Prime cries foul as if it had only
`
`
`
`10
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`become aware of the requirement to provide more than mere conclusory statements
`
`to establish “motivation to combine” for the very first time after the Board’s Final
`
`Written Decision. Request at 4-7. Simply because neither the Board nor Patent
`
`Owner previously told Prime that it failed to meet its burden on combinability,
`
`Prime would have its burden mooted and would have the Board waive its
`
`obligation to decide the merits of Prime’s conclusory combinability argument.
`
`Moreover, such a ruling would pervert the IPR process and take away
`
`a patent owner’s ability to exercise good judgment to selectively address only
`
`those issues that it deems worthy of responding to.
`
`F.
`
`Prime Was Not Unjustly Prejudiced
`With no legal authority, Prime argues it was unjustly prejudiced by
`
`the Board’s decision because Prime is now subject to estoppel that would not have
`
`applied had the Board denied institution. Prime’s argument ignores the fact that
`
`the IPR process allows for the possibility that claims may survive the trial despite
`
`institution because “the decision to institute and the final written decision are two
`
`very different analyses, and each applies a qualitatively different standard.”
`
`Magnum Oil, 829 F.3d at 1376. Prime’s suggestion – essentially that any final
`
`written decision that does not invalidate instituted claims unjustly prejudices the
`
`Petitioner on account of the estoppel provision – is effectively an attack on the
`
`
`
`11
`
`
`
`entire doctrine of estoppel. Prime has provided no legal authority supporting such
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`an attack.
`
`Moreover, Prime blames the Board for Prime’s own deficiencies in its
`
`original Petition. Prime presumably knew of the risks of estoppel before filing its
`
`Petition. Prime presumably also knew that the standard for institution is lower
`
`than the standard for the final written decision. This qualitative difference in
`
`standards leads to a very real possibility that patent claims might be subject to
`
`institution yet still survive the trial. If estoppel was important to Prime, it was
`
`incumbent on Prime to prepare as strong a Petition as it deemed appropriate in
`
`light of the risks posed by the estoppel provisions, while also considering that
`
`those arguments must hold up under the higher burden during the IPR trial. Prime
`
`cannot now be heard to complain.
`
`III. THE BOARD DID NOT MISAPPREHEND OR OVERLOOK ANY
`ARGUMENTS AND EVIDENCE BECAUSE THOSE ARGUMENTS
`WERE NOT TIMELY
`A. The Board Fully Addressed the Only Combinability Arguments
`and Evidence Prime Presented During Trial
`The Board found that Prime “has not set forth a sufficient rationale for
`
`combining the cited teachings of the ‘081 and ‘670 Patents with those of Sullivan.”
`
`Paper 54 at 45. The Board carefully evaluated each of Prime’s arguments and the
`
`
`
`12
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`corresponding evidence (Paper 54 at 43-45), and found that Prime failed to meet its
`
`burden.
`
`B.
`
`Section III of Prime’s Request is Replete with New Argument
`Never Before Raised
`Section III of Prime’s Request is much more than an explanation of
`
`what the Board allegedly overlooked or misapprehended. It is a full attempt to
`
`belatedly argue the merits regarding the teachings of the references. Tellingly,
`
`Prime only sparsely quotes actual arguments from the record, and instead includes
`
`new citations to the record never before relied on for the proposition of
`
`combinability as well as new elaboration and explanation of the references never
`
`before given. Request at 8-13 (citing Ex. 2021 at 21:21-22, 26:10-12, 31:12-15;
`
`IPR2016-01491, Paper 37; Ex. 2003, FIGS. 60, 62). This is clearly new argument
`
`never before raised in these proceedings. It should all be disregarded.
`
`Pursuant to the Board’s email of January 25, 2018, Patent Owner may
`
`not now address Prime’s new arguments on the merits. Accordingly, Patent Owner
`
`simply highlights for the Board that Section III of Prime’s Request seeks to fix the
`
`deficient and conclusory statements in its original Petition with a series of new
`
`arguments that it tries to disguise as material that should have been “given” or
`
`“obvious.” Many of Prime’s statements in this section begin with a phrase
`
`intended to cause a reader to think the reader is about to read something needs no
`
`
`
`13
`
`
`
`explaining, but then Prime follows those phrases with detailed and complicated
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`argument never before made or suggested.
`
`In one example, Prime includes almost a full page of new argument
`
`and explanation under the guise of explaining what the Board “overlooked.”
`
`Request at 9-10. To disguise this as previously included materials that might have
`
`been overlooked, Prime introduces it new arguments as follows:
`
` “Of course, the only way to project just “a portion” of an image is to
`
`delineate the specific portion of the image that is actually projected –
`
`i.e., create a mask.” Request at 9 (emphasis added).
`
` “It is obviously impossible to project only “a portion of an image
`
`without having created a data structure to identify the specific group
`
`of pixels that will be projected – i.e., without creating a mask.”
`
`Request at 9 (emphasis added).
`
` “Clearly it is not the entire 2D image that is projected onto the
`
`virtual 3D head.” Request at 9 (emphasis added).
`
`In these passages, Prime also describes Figures 60 and 62 of the ‘793
`
`patent, which were never discussed in either party’s earlier papers, and even points
`
`to a different IPR proceeding (IPR 2016-01491) in attempt to support its new
`
`arguments. Request at 9.
`
`
`
`14
`
`
`
`Prime also raises arguments based on portions of Dr. Forsyth’s
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`deposition testimony that neither party nor the Board has relied on. Request at 10-
`
`11. Prime’s failure to cite to any position previously set forth in its papers when
`
`relying on these passages is telling. Prime would now have the Board find
`
`unpatentability based on this never-before-relied-upon evidence, but this is exactly
`
`what is prohibited by the very cases Prime cited. See, e.g., Nuvasive, 841 F.3d at
`
`972, 975 (finding the Board improperly relied on uncited portions of the prior art
`
`as a basis for finding unpatentability).
`
`IV. CONCLUSION
`For all the foregoing reasons, Petitioner’s Request should be denied.
`
`
`Dated: February 9, 2018
`San Diego, CA
`
`
`
`
`
`
`/s/Daniel N. Yannuzzi /
`By:
` DANIEL N. YANNUZZI
` Registration No.: 36,727
`
`
`
`15
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that on
`
`February 9, 2018, a copy of the foregoing PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S REQUEST FOR REHEARING was
`
`served electronically on the following counsel via the email addresses listed
`
`below:
`
`
`
`Lead Counsel
`
`Backup Counsel
`
`
`
`Joshua Glucoft (Reg. No. 67,696)
`Irell & Manella LLP
`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067-4276
`Tel: 310.203.7189
`Fax: 310.203.7199
`E-mail: JGlucoft@Irell.com
`PrimeFocusIPR@irell.com
`Michael Fleming (Reg. No. 67,933)
`Irell & Manella LLP
`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067-4276
`Tel: 310.203.7915
`Fax: 310.556.5258
`E-mail: MFleming@Irell.com
`PrimeFocusIPR@irell.com
`
`/s/Jesse Salen/
`Jesse Salen
`
`i
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`